Case 1:20-cv-00034-ADA Document 45 Filed 03/20/20 Page 1 of 38
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`ANCORA TECHNOLOGIES, INC.,
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`CIVIL ACTION NO. 1:20-cv-0034
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`Plaintiff,
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`v.
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`LG ELECTRONICS INC. and LG
`ELECTRONICS U.S.A., INC.,
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`Defendants.
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`JURY TRIAL DEMANDED
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`ANCORA TECHNOLOGIES, INC.,
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`CIVIL ACTION NO. 1:20-cv-0034
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`Plaintiff,
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`v.
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`JURY TRIAL DEMANDED
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
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`Defendants.
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`DEFENDANTS’ OPENING CLAIM CONSTRUCTION BRIEF
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`Case 1:20-cv-00034-ADA Document 45 Filed 03/20/20 Page 2 of 38
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`Table of Contents
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`I.
`
`II.
`
`INTRODUCTION .............................................................................................................. 1
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`LITIGATION HISTORY ................................................................................................... 4
`
`III.
`
`ARGUMENT ...................................................................................................................... 5
`
`A.
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`“using an agent to set up a verification structure in the erasable, non-
`volatile memory of the BIOS” ................................................................................ 5
`
`1.
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`2.
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`3.
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`The term “agent” is a “nonce” word. .......................................................... 6
`
`The specification and the prosecution history confirm that “agent”
`does not connote structure. ......................................................................... 8
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`The associated algorithm is disclosed at 6:18-28 in the patent. ................ 10
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`“set up a verification structure” ............................................................................ 11
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`“memory of the BIOS” ......................................................................................... 14
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`1.
`
`The applicants disclaimed a “memory of the BIOS” that is
`recognized by an operating system as a storage device or that
`contains a file system. ............................................................................... 15
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`2.
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`The “memory of the BIOS” is the memory that stores the BIOS. ............ 18
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`“verifying the program using at least the verification structure” .......................... 18
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`“acting on the program according to the verification” .......................................... 20
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`“license”/“license record” ..................................................................................... 21
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`1.
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`2.
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`3.
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`The preamble of the claim is limiting. ...................................................... 21
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`License ...................................................................................................... 23
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`License Record.......................................................................................... 24
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`Order of Steps ....................................................................................................... 24
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`“BIOS” .................................................................................................................. 26
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`1.
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`2.
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`“BIOS” is stored in ROM. ........................................................................ 26
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`“BIOS” runs automatically when a computer is powered on. .................. 27
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`H.
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`I.
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`“selecting a program residing in the volatile memory” ........................................ 28
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`Case 1:20-cv-00034-ADA Document 45 Filed 03/20/20 Page 3 of 38
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`J.
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`K.
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`L.
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`“program” ............................................................................................................. 28
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`“volatile memory” ................................................................................................. 29
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`“first non-volatile memory area of the computer” ................................................ 30
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`ii
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`Case 1:20-cv-00034-ADA Document 45 Filed 03/20/20 Page 4 of 38
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`
`
`Cases
`
`Altiris, Inc. v. Symantec Corp.,
`318 F.3d 1363 (Fed. Cir. 2003)................................................................................................25
`
`Ancora Techs., Inc. v. Apple, Inc.,
`744 F.3d 732 (Fed. Cir. 2014).......................................................................................... passim
`
`Arendi S.A.R.L. v. Google LLC,
`882 F.3d 1132 (Fed. Cir. 2018)................................................................................................18
`
`Bell Atlantic Network Servs., Inc. v. Covad Commc’ns Group, Inc.,
`262 F.3d 1258 (Fed. Cir. 2001)................................................................................................14
`
`Biedermann Motech GmbH v. Acme Spine, LLC,
`No. CV 06-3619 SJO, 2007 WL 6210841 (C.D. Cal. Aug. 31, 2007) ....................................26
`
`C.R. Bard, Inc. v. U.S. Surgical Corp.,
`388 F.3d 858 (Fed. Cir. 2004)..................................................................................................11
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`C.W. Zumbiel Co. v. Kappos,
`702 F.3d 1371 (Fed. Cir. 2012)................................................................................................22
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`Cypress Lake Software, Inc. v. Samsung Elecs. Am., Inc.,
`382 F. Supp. 3d 586, 614-17 (E.D. Tex. 2019)..........................................................................8
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`Digital Retail Apps Inc. v. H-E-B, LP,
`No. 6-19-cv-00167-ADA, 2020 WL 376664 (W.D. Tex. Jan. 23, 2020) ............................8, 10
`
`Fenner Investments, Ltd. v. Cellco P'ship,
`778 F.3d 1320 (Fed. Cir. 2015)................................................................................................14
`
`Genband USA v. Metaswitch Networks,
`No. 2:14-cv-33-RG-RSP, 2015 WL 4722185 (E.D. Tex. Aug. 7, 2015) ..................................8
`
`Global Equity Mgmt. (SA) Pty. Ltd. v. Expedia, Inc.,
`No. 2:16-cv-00095-RWSRSP, 2016 WL 7416132 (E.D. Tex. Dec. 22, 2016) .........................8
`
`Honeywell Int’l, Inc. v. ITT Indus., Inc.,
`452 F.3d 1312 (Fed. Cir. 2006)..........................................................................................14, 20
`
`Joao Control & Monitoring Systems LLC v. Protect America, Inc.,
`No. 1-14-cv-134, 2015 WL 4937464, at *7 (W.D. Tex. Aug. 18, 2015) ..............................7, 8
`
`iii
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`Case 1:20-cv-00034-ADA Document 45 Filed 03/20/20 Page 5 of 38
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`Kaken Pharm. Co. v. Iancu,
`No. 2018-2232, 2020 WL 1222728 (Fed. Cir. Mar. 13, 2020) ..........................................15, 18
`
`Mantech Envtl. Corp. v. Hudson Envtl. Servs., Inc.,
`152 F.3d 1368 (Fed. Cir. 1998)................................................................................................25
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..........................................................................................12, 23
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co.,
`182 F.3d 1298 (Fed. Cir. 1999)................................................................................................22
`
`Poly-Am., L.P. v. API Indus., Inc.,
`839 F.3d 1131 (Fed. Cir. 2016)..........................................................................................12, 20
`
`Synchronoss Techs., Inc. v. Dropbox Inc.,
`No. 16-cv-00119, 2017 WL 6059302 (N.D. Cal. Dec. 7, 2017) ................................................7
`
`Techno View IP, Inc. v. Facebook Techs., LLC,
`No. 17-386-CFC-CJB, 2018 WL 6427874 (D. Del. Dec. 7. 2018) .........................................10
`
`Verint Sys. Inc. v. Red Box Recorders Ltd.,
`166 F. Supp. 3d 364, 379-381 (S.D.N.Y. 2016) ........................................................................8
`
`ViaSat, Inc. v. Space Sys./Loral, Inc.,
`No. 3:12-CV-00260-H, 2013 WL 3927729 (S.D. Cal. May 29, 2013) ...................................18
`
`Williamson v. Citrix Online,
`792 F.3d 1339, 1349 (Fed. Cir. 2015)..................................................................................6, 10
`
`Statutes
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`35 U.S.C. § 112 ¶ 6 ..............................................................................................................5, 6, 7, 8
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`iv
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`Case 1:20-cv-00034-ADA Document 45 Filed 03/20/20 Page 6 of 38
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`I.
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`INTRODUCTION
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`
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`The ’941 Patent, entitled “Method of Restricting Software Operation within a License
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`Limitation,” describes a method of identifying and restricting unauthorized use of a software
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`program on a computer. Ex. 1 (’941 Patent) at 1:6-8. The patent is directed to preventing software
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`piracy by verifying that software programs are licensed. Id. This is accomplished by creating a
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`distinct identifier for a particular computer that can be used to verify whether a program is licensed
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`for use on that computer. See, e.g., id. at 2:27-59.
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`The “Summary of the Invention” explains how the invention operates. Initially, a
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`verification structure is set up in the BIOS memory of the computer to indicate that a specified
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`program is licensed to run on the computer.1 Id. at 1:59-62. The verification structure is formed by
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`encrypting a license record associated with the program using a key that uniquely identifies the
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`computer. The key is stored in the BIOS memory. Id. at 1:62-67. Later when a user wants to use
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`that program, a license verifier application verifies whether the program is licensed to run on the
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`computer. Id. at 2:10-26. The license verifier accesses the program, retrieves the license record
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`from the program, and encrypts the license record using the key of the computer. Id. It then
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`compares the encrypted license record with the encrypted records previously stored in the BIOS
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`memory. Id. In case of a match, the program is found to be licensed and is allowed to run on the
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`computer. Otherwise, appropriate action, including potential restriction, is taken. Id.
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`The patent acknowledges that software-based and hardware-based methods to determine
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`whether a program on a computer is licensed were already known in the art, but explains that these
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`methods were purportedly deficient. Id. at 1:19-32. The patent claims that its method overcomes
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`1 Figure 1 of the ’941 Patent depicts a computer (1) that contains a non-volatile memory area of
`the BIOS (4 & 5) and a volatile memory area (6) (i.e., the internal RAM memory). The BIOS
`memory has two portions, a first non-volatile memory area (4) (e.g., the ROM section) and a
`second non-volatile memory area (5) (e.g., the E2PROM section).
`1
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`Case 1:20-cv-00034-ADA Document 45 Filed 03/20/20 Page 7 of 38
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`these deficiencies based on two specific improvements. First, the invention uses a key that is
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`unique to the computer to encrypt the verification structure, allowing any attempt to run the
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`program on an unlicensed computer to be detected immediately. Id. at 2:27-59. Second, the
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`invention stores the encrypted verification structure in the BIOS memory—a memory space that
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`the patent describes as being more difficult to access and tamper with than storage areas used by
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`earlier methods. Id. 1:46-2:5; 3:4-14; 4:45-48.
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`During prosecution, the applicants made extensive arguments based on these two alleged
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`improvements to differentiate the alleged invention from the prior art and to gain allowance.
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`Mirroring the specification, the applicants made clear that several concepts described below were
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`fundamental to the invention.
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`Encrypting the verification structure using a pseudo-unique key: The Examiner initially
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`rejected the pending claims as anticipated by US 5,892,900 (“Ginter”). The applicants argued that
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`Ginter did “not anticipate the present invention” because it “d[id] not disclose . . . setting up a
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`verification structure.” Ex. 4 (Response, May 23, 2001, p. 6). In particular, the applicants
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`highlighted that the “present invention” overcomes deficiencies associated with Ginter because
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`“[i]n the present method, the verification structure is formed using a unique key for each
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`computer.” Id. at p. 8. The applicants subsequently confirmed that the “pseudo-unique key recited
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`in claims 1 and 20” is crucial to the invention. Ex. 8 (Response, Feb. 5, 2002, p. 3) (emphasis in
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`original).
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`BIOS memory is not recognized by the operating system and does not have a file system:
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`The Examiner also rejected the pending claims based on US 6,189,146 (“Misra”) in view of US
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`5,479,639 (“Ewertz”). To overcome the rejection, the applicants argued that by using BIOS
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`memory to store application data, “the present invention proceeds against conventional wisdom
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`2
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`Case 1:20-cv-00034-ADA Document 45 Filed 03/20/20 Page 8 of 38
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`in the art.” Ex. 8 (Response, Feb. 5, 2002, p. 6) (emphasis added). The applicants argued that an
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`“ordinary skilled artisan would not consider the BIOS as a storage medium to preserve application
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`data for at least two reasons.” Id. First, “[t]here is no OS support whatsoever to write data to the
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`system BIOS,” and, second, “no file system is associated with the BIOS.” Id. These features were
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`“further evidence that OS level application programmers would not consider the BIOS as a storage
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`medium for license data.” Id. Echoing the specification, the applicants underscored the benefits of
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`using the claimed BIOS memory that is generally inaccessible, as opposed to more readily
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`accessible memory.
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`The invention operates at the OS-level: In arguing against the Misra and Ewertz
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`combination, the applicants further characterized their invention as operating at the OS-level as
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`opposed to the BIOS-level. The applicants argued that “[s]oftware license management
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`applications, such as the one of the present invention, are operating system (OS) level programs.”
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`Ex. 8 (Response, Feb. 5, 2002, p. 5) (emphasis added). Critically, the Examiner relied upon the
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`applicants’ characterization in the Notice of Allowance. Ex. 9 (Notice of Allowance dated Mar.
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`28, 2002, Reasons for Allowance, p. 4).
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`Using an agent: The applicants acknowledged during prosecution that BIOS memory was
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`well-known in the art, as were OS-level methods of verifying that a program was licensed. The
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`applicants argued that the OS-level and the BIOS-level are “mutually exclusive” and “cannot run
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`at the same time.” Ex. 8 (Response, Feb. 5, 2002, p. 5). The purported breakthrough in applicants’
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`invention was to somehow allow the OS-level programs to write to the BIOS memory. Although
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`the specification nowhere refers to or describes an “agent,” the applicants added “agent” to the
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`claims and portrayed agent as a novel concept, hitherto unknown in prior art, to fill this void. When
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`allowing the claims, the Examiner pointed to the problem in prior art that “a computer BIOS is not
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`3
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`Case 1:20-cv-00034-ADA Document 45 Filed 03/20/20 Page 9 of 38
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`setup to manage a software license verification structure” but noted that the “present invention
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`overcomes this difficulty by using an agent to set up a verification structure in the . . . memory of
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`the BIOS.” Ex. 9 (Notice of Allowance dated Mar. 28, 2002, Reasons for Allowance, p. 4)
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`(emphasis added).
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`Ancora now takes a shifting sands approach, walking away from the representations the
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`applicants made to the USPTO, as well as the positions it has taken in other litigations, proposing
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`that the terms should simply be afforded their “plain and ordinary meaning.” Ancora ignores the
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`fact that applicants told the USPTO that the invention uses a pseudo-unique key to encrypt the
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`verification structure, ignores the fact that the applicants told the USPTO that BIOS memory is
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`not recognized by an operating system and does not have a file system, ignores the fact that the
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`applicants told the USPTO that the invention operates at the OS-level, and ignores the fact that the
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`USPTO relied on those arguments as the basis for allowance. Ancora even walks away from the
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`alleged heart of the invention, the “agent,” which Ancora now contends can simply be any
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`“software program or routine.” That approach will not aid the jury. Nor should Ancora be allowed
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`to renege on the bargain the applicants made with the USPTO to receive their patent.
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`II. LITIGATION HISTORY
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`The ’941 Patent was first asserted in 2008 against Toshiba America Information Systems,
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`et al., and Microsoft Corporation successfully intervened in that case. See C.A. No. 8:08-cv-00626
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`(Central District of California) (the “Microsoft Litigation”) at ECF Nos. 1, 49. Just before
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`dismissal, the parties filed their respective claim construction briefs. Id. at ECF Nos. 101, 102.
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`Ancora next filed suit against Apple in 2010. See C.A. No. 2:10-cv-10045 (Central
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`District of California) at ECF No. 1. The case was transferred to the Northern District of
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`California (C.A. No. 4:11-cv-06357) (the “Apple Litigation”) where the parties engaged in claim
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`construction proceedings, resulting in a Markman order. See Apple Litigation at ECF Nos. 94,
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`4
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`Case 1:20-cv-00034-ADA Document 45 Filed 03/20/20 Page 10 of 38
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`96, 107. A number of the constructions were ultimately appealed to the Federal Circuit. See
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`Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 736 (Fed. Cir. 2014).
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`Ancora recently filed suit against HTC America, Inc. and HTC Corporation in the Western
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`District of Washington (the “HTC Litigation”) on December 15, 2016. See C.A. No. 2:16-cv-
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`01919 at ECF No. 1. The parties have fully briefed their respective claim construction positions
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`(see HTC Litigation at ECF Nos. 59, 60, 62, 63), however no Markman order has been issued.
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`III. ARGUMENT
`A.
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`“using an agent to set up a verification structure in the erasable, non-volatile
`memory of the BIOS”
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`Plaintiff’s Proposal
`plain and ordinary meaning
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`“agent” = “software program or routine”
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`Defendants’ Proposal
`This limitation is a means plus function
`limitation governed by pre-AIA 35 U.S.C. §
`112 ¶ 6.
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`Function: “set up a verification structure in the
`erasable, non-volatile memory of the BIOS”
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`Structure: Algorithm found at 6:18-28; if not,
`indefinite due to a lack of corresponding
`structure
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`The applicants claimed that the heart of their alleged invention was writing an encrypted
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`verification structure in the BIOS memory, and protrayed that the “agent,” a concept hitherto
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`unknown in the prior art, would accomplish that. Based on the applicants’ portrayal, the Examiner
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`noted that use of an “agent” was crucial to the alleged invention because the “agent” overcame the
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`perceived difficulty of setting up a verification structure in the BIOS memory. Ex. 9 (Notice of
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`Allowance dated Mar. 28, 2002, Reasons for Allowance, p. 4). Ancora’s proposal to give the term
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`its “plain and ordinary meaning” and to construe “agent” merely as any “software program or
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`routine” contradicts the applicants’ prior depiction of the term as a novel concept.
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`The term “agent” was added during prosecution to overcome a § 112 rejection that the
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`5
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`Case 1:20-cv-00034-ADA Document 45 Filed 03/20/20 Page 11 of 38
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`applicants had not disclosed the necessary hardware to “add, remove and modify a license record”
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`in the BIOS memory. Ex. 5 (June 22, 2001, Final Rejection, pp. 3-6).2 When amending claim 1,
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`the applicants described the term “agent” in purely functional terms, i.e., the “agent” “set[s] up a
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`verification structure in the erasable, non-volatile memory of the BIOS.” While pre-AIA 35 U.S.C.
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`§ 112 ¶ 6 allows an element in a claim to “be expressed as a means or step for performing a
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`specified function without the recital of structure, material, or acts in support thereof,” when an
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`applicant chooses to claim in such a manner, the “claim shall be construed to cover the
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`corresponding structure, materials, or acts described in the specification and equivalents thereof.”
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`Here, the associated structure is recited in the ’941 Patent at 6:18-28, the only portion of the
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`specification that describes an algorithm for setting up the verification structure of claim 1.
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`Ancora’s proposal is an improper attempt to interpret the claims to cover any and all ways of
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`performing the claimed function, in contravention of 35 U.S.C. § 112 ¶ 6.
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`1.
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`The term “agent” is a “nonce” word.
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`The claims at issue do not use the terms “means” or “step for.” Hence, the Defendants must
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`demonstrate that the claim term fails to “‘recite sufficiently definite structure’ or else recites
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`‘function without reciting sufficient structure for performing that function’” in order for 35 U.S.C.
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`§ 112 ¶ 6 to apply. Williamson, 792 F.3d at 1349. In Williamson, the Federal Circuit held that
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`although the term “distributed learning control module” did not expressly invoke the word
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`“means,” the term “‘[m]odule’ is a well-known nonce word that can operate as a substitute for
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`‘means’ in the context of § 112, para. 6.” Id. at 1348-54. The court went on to explain that
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`“‘module’ is simply a generic description for software or hardware that performs a specified
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`2 Notably, the ’941 Patent was prosecuted before the Federal Circuit in Williamson v. Citrix Online
`“expressly overrule[d] the characterization of [the presumption that a limitation lacking the word
`‘means’ is not subject to § 112] as strong.” 792 F.3d 1339, 1349 (Fed. Cir. 2015).
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`6
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`Case 1:20-cv-00034-ADA Document 45 Filed 03/20/20 Page 12 of 38
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`function,” and that “the word ‘module’ does not provide any indication of structure,” but rather
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`“sets forth the same black box recitation of structure for providing the same specified function as
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`if the term ‘means’ had been used.” Id. at 1350. Like “module,” the word “agent” is a nonce word
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`that can be substituted for “means.” There is no substantive difference between a “means for setting
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`up a verification structure” and “using an agent to set up a verification structure.”
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`Because the term” agent” is a nonce word, it does not provide any indication of structure
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`to a person of ordinary skill in the art. Defendants’ expert, Dr. Erez Zadok, confirms that a person
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`of ordinary skill in the art would not understand the term “agent” to connote sufficient structure.
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`Zadok Decl. at ¶¶ 52-60. While the term “agent” can be found in dictionaries, the dictionaries
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`provide disparate definitions for the term. As illustrated by the Dictionary of Computing, agents
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`“may be software, hardware, or both.” Id. The term “agent” does not connote a particular structure
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`that would set up a verification structure in the erasable, non-volatile memory of the BIOS. Id.
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`Notably, when evaluating the term “agent,” courts have found that the term does not
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`connote sufficient structure to a person of ordinary skill. In Synchronoss Techs., Inc. v. Dropbox
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`Inc., No. 16-cv-00119, 2017 WL 6059302, at *10 (N.D. Cal. Dec. 7, 2017), the court found that
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`the term “synchronization agent” invoked 35 U.S.C. § 112 ¶ 6, despite the fact that the term
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`included the prefix “synchronization” because a person of ordinary skill in the art would only
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`understand the term “agent” to be a “generic descriptor[] for software or hardware that . . . manages
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`something.” Similarly, in Joao Control & Monitoring Systems LLC v. Protect America, Inc., the
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`Court evaluated the terms “intelligent agent,” “software agent,” and “mobile agent,” and ultimately
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`concluded: “there was no single agreed-upon definition of the ‘agent’ terms which a skilled artisan
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`would have understood—with reasonable certainty—based on the terms’ use in the claim language
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`7
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`Case 1:20-cv-00034-ADA Document 45 Filed 03/20/20 Page 13 of 38
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`alone.” No. 1-14-cv-134, 2015 WL 4937464, at *7 (W.D. Tex. Aug. 18, 2015).3
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`Ancora argues that an “agent” is simply a “software program or routine,” and thus not
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`governed by 35 U.S.C. § 112 ¶ 6. However, as this Court recently recognized, the fact that certain
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`terms may connote some type of software (or hardware running software) is not enough to remove
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`them from the ambit of 35 U.S.C. § 112 ¶ 6. Digital Retail Apps Inc. v. H-E-B, LP, No. 6-19-cv-
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`00167-ADA, 2020 WL 376664, at *5 (W.D. Tex. Jan. 23, 2020) (“[E]ven though ‘module’ refers
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`to software, and ‘communication module’ certainly refers to software related to communication,
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`this is nowhere near the ‘sufficiently definite structure’ required by Federal Circuit precedent.”).4
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`The remainder of the limitation at issue here fails to provide any further structure for the
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`term “agent.” Rather, the limitation merely recites the function of the “agent,” i.e., to “set up a
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`verification structure in the erasable, non-volatile memory of the BIOS.” While the claim describes
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`what is being stored, i.e., the verification structure, and where it is being stored, i.e., the non-
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`volatile memory of the BIOS, it does not recite any particular structure for doing so, nor does it
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`describe how the “agent” fits in structurally with the other components of the system.
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`2.
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`The specification and the prosecution history confirm that “agent” does
`not connote structure.
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`The scope of the functions performed by the “agent” in claims 1 and 18 vary significantly.
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`3 The term “agent” has only been found to connote sufficient structure in certain instances where
`the claims and specification explained how the “agent” interacted with other components in a way
`that informed its structural character. See, e.g., Genband USA v. Metaswitch Networks, No. 2:14-
`cv-33-RG-RSP, 2015 WL 4722185, at *17-18 (E.D. Tex. Aug. 7, 2015).
`4 Other courts have found terms like “software” not to indicate sufficiently definite structure, and
`are therefore subject to 112 ¶ 6. See, e.g., Cypress Lake Software, Inc. v. Samsung Elecs. Am.,
`Inc., 382 F. Supp. 3d 586, 614-17 (E.D. Tex. 2019) (finding “code for” terms subject to 112 ¶ 6);
`Global Equity Mgmt. (SA) Pty. Ltd. v. Expedia, Inc., No. 2:16-cv-00095-RWSRSP, 2016 WL
`7416132, at *29-*30 (E.D. Tex. Dec. 22, 2016) (finding “program code for configuring . . .”
`subject to 112 ¶ 6); Verint Sys. Inc. v. Red Box Recorders Ltd., 166 F. Supp. 3d 364, 379-381
`(S.D.N.Y. 2016) (finding “first computer application operative” subject to 112 ¶ 6).
`
`8
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`Case 1:20-cv-00034-ADA Document 45 Filed 03/20/20 Page 14 of 38
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`While claim 1 requires that the “agent” perform the function of “sett[ing] up a verification structure
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`in the erasable, non-volatile memory of the BIOS,” claim 18 requires that the agent not only set
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`up the verification structure by “encrypting license information using the pseudo-unique key” and
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`“storing the encrypting license information,” but also that the agent must (1) “extract[] license
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`information from [a] software program,” and (2) “verify[] the application software program.”5 By
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`ascribing so many different functions to the term “agent,” the ’941 Patent, as in Williamson, clearly
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`uses the term “agent” as a black box to describe generic software (or software running on
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`hardware) for performing numerous tasks. The specification fails to provide guidance because the
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`term was added during prosecution and does not otherwise appear outside of the claims.
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`Claim 1 as originally drafted did not include the term “agent,” and the Examiner rejected
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`the claim because it did not disclose the necessary hardware to “add, remove and modify a license
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`record” in the BIOS Memory. Ex. 5 (June 22, 2001, Final Rejection, pp. 3-6). In response, the
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`applicants amended claim 1 to include the “using an agent” limitation. Ex. 6 (Response to Final
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`Office Action, Nov. 14, 2001, p. 2). The applicants later noted that “the present invention proceeds
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`against conventional wisdom . . . . The BIOS area is not considered a storage area for computer
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`applications.” Ex. 8 (Response, Feb. 5, 2002, p. 6). The Examiner allowed the claims because the
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`applicants had apparently addressed the problem by proposing a novel solution that purportedly
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`did not exist in prior art, i.e., an “agent” that could set up the verification structure in BIOS:
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`[T]he closest prior art systems, singly or collectively, do not teach licensed
`programs running at the OS level interacting with a program verification structure
`stored in the BIOS to verify the program using the verification structure . . . .
`Further, it is well known to those of ordinary skill of the art that a computer BIOS
`is not setup to manage a software license verification structure. The present
`invention overcomes this difficulty by using an agent to set up a verification
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`5 The Examiner noted that the “agent” did not perform the function of “acting on the application
`software program,” Ex. 9 (Notice of Allowance dated Mar. 28, 2002, Reasons for Allowance, pp.
`2-3); however, claim 18, as written, suggests that the “agent” performs this function as well.
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`9
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`

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`Case 1:20-cv-00034-ADA Document 45 Filed 03/20/20 Page 15 of 38
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`structure in the erasable, non-volatile memory of the BIOS.
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`Ex. 9 (Notice of Allowance dated Mar. 28, 2002, Reasons for Allowance, p. 4) (emphasis added).
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`The fact that the term “agent” does not connote sufficiently definite structure in the context
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`of the claims is consistent with the applicants’ position and the Examiner’s understanding that the
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`agent performs a function that is allegedly novel and did not exist in prior art. See Techno View
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`IP, Inc. v. Facebook Techs., LLC, No. 17-386-CFC-CJB, 2018 WL 6427874, *4 (D. Del. Dec. 7.
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`2018) (noting that means-plus-function claiming applies to method claims where “the structural
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`limitation clearly constitutes the point of novelty in the invention.”).
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`3.
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`The associated algorithm is disclosed at 6:18-28 in the patent.
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`Because the term “agent” does not connote sufficiently definite structure, “the court must
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`determine what structure, if any, disclosed in the specification corresponds to the claimed
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`function” of setting up the verification structure. Williamson, 792 F.3d at 1351. “Structure
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`disclosed in the specification qualifies as ‘corresponding structure’ if the intrinsic evidence clearly
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`links or associates that structure to the function recited in the claim.” Id. at 1352. “Computer-
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`implemented means-plus-function claims are indefinite unless the specification discloses an
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`algorithm to perform the function associated with the limitation.” Digital Retail, 2020 WL 376664,
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`at *3. The only portion of the specification that resembles an algorithm states:
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`Setting up (18) the verification structure includes the steps of: establishing or
`certifying the existence of a pseudo-unique key in the first non-volatile memory
`area; and establishing at least one license-record location in the first or the second
`nonvolatile memory area. Establishing a license-record includes the steps of:
`forming a license-record by encrypting of the contents used to form a license-record
`with other predetermined data contents, using the key; and establishing the
`encrypted license-record in one of the at least one established license-record
`locations (e.g. 10-12 in FIG. 1).
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`’941 Patent at 6:18-28 (emphasis added). To the extent Ancora argues that 6:18-28 is not the
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`corresponding structure, then the claims must be rendered indefinite, as there is nothing else in the
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`10
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`Case 1:20-cv-00034-ADA Document 45 Filed 03/20/20 Page 16 of 38
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`specification that resembles the required algorithm.
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`B.
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`“set up a verification structure”
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`Defendants’ Proposal
`“forming a structure by encrypting a license
`record using a pseudo-unique key for each
`computer”
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`Plaintiff’s Proposal
`plain and ordinary meaning
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`The parties dispute whether the limitation “set up the verification structure” requires
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`encrypting a license record using a pseudo-unique key for each computer. In describing the
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`invention in the specification and distinguishing the present invention from the prior art, the
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`applicants made clear that this is indeed a requirement of the claims.
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`The “Summary of the Invention” states that “[t]he present invention relates to a method of
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`restricting software operation within a license limitation,” and that “[t]his method strongly relies
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`on the use of a key and of a record.” Ex. 1 (’941 Patent) at 1:38-42 (emphasis added). The
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`Summary further states that the verification structure “is implemented by encrypting the license
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`record (or portion thereof) using said key (or portion thereo